Ex Parte Ehlis et al

Board of Patent Appeals and Interferences

Oct 26, 2010

10542467 (B.P.A.I. Oct. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS EHLIS, DIETMAR HUGLIN, and ELEK BORSOS
__________

Appeal 2010-008589
Application 10/542,467
Technology Center 1600
__________

Before ERIC GRIMES, DONALD E. ADAMS, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to
triazine compounds. The Patent Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-008589
Application 10/542,467

2
STATEMENT OF THE CASE
Claims 1-8 and 11-13 are on appeal. Claim 1 is representative and
reads as follows:
1. A compound of formula (1)

wherein
R1, R2, R3, R4, R5, R6, R7 and R8 independently from each other are
hydrogen; C1-C18alkyl; C2-C18alkenyl; C5-C7cycloalkyl or
C1-C6alkylene-C5-C7cycloalkyl;
R9 is hydrogen; Cl-C18alkyl; C2-C18alkenyl; C5-C7cycloalkyl;
C1-C6alkylene-C5-C7cycloalkyl or C6-Cl0aryl;
A is-S-; or –NRl0-, wherein R10 has the same meanings as R9; and
X is COOR11; CONR12Rl3; SO3R14 or SO2NRl5Rl6, wherein Rll, R12, R13,
R14, R15 and R16 have independently from each other the same
meanings as R9.

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over CIBA.2

2 GB Patent No. 1,126,979 issued to CIBA Ltd., Sep. 11, 1968.
Appeal 2010-008589
Application 10/542,467

3
Claims 2-8 and 11-13 have not been argued separately and therefore
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
The Issue
The Examiner’s position is that CIBA taught triazine derivatives
which embrace the instantly claimed invention. (Ans. 3.) The Examiner
found that CIBA differs from the claimed invention in that CIBA disclosed a
hydroxy group on the phenyl ring (aryl) at the ortho position, while the
hydroxy group in the instant claims is on the phenyl ring at the para position.
(Id. at 3-4.) According to the Examiner, the compounds of the instant claims
are obvious over the prior art as they represent positional isomers and are
expected to possess similar properties. (Id. at 4.)
Appellants contend that “based on the teachings of Biland et al [i.e.,
CIBA], one of ordinary skill in the art would not be motivated to synthesize
the instant triazine UV absorbers.” (App. Br. 8.) According to Appellants,
CIBA, as well as two additional references,3 “each [taught] that an ortho-
hydroxy group on the phenyl ring that is directly and covalently attached to
the triazine nucleus is a requirement for a triazine based UV absorber.” (Id.
at 7.) However, Appellants assert that the claimed compounds “have
excellent UV absorber properties” while not having the ortho-hydroxy group
on the phenyl ring. (Id. at 8.)

3 Ciba Specialty Chemicals, “Ciba® Tinosorb®s: The highly efficient broad-
spectrum UV absorber,” Pub. No. PC.UVPS.TB.0208.e.01 (2002); Werner
Baschong, “Sun protection beyond sunburn,” Cosmetics Today, pp. 9-12
(published date unknown.).
Appeal 2010-008589
Application 10/542,467

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The issue with respect to this rejection is whether the record supports
the Examiner’s conclusion that CIBA would have made the claimed
compounds obvious.

Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of CIBA. (See Ans. 3-4.)
2. CIBA stated that its triazines “hav[e] valuable properties as stabilizers
of organic materials against the action of light, heat or atmospheric
oxygen….” (CIBA p. 1, ll. 5-7.)

Principles of Law
“If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007). “[S]tructural similarity between claimed and prior art
subject matter, proved by combining references or otherwise, where the
prior art gives reason or motivation to make the claimed compositions,
creates a prima facie case of obviousness, and . . . the burden (and
opportunity) then falls on an applicant to rebut that prima facie case.” In re
Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en banc).

Analysis
We are not persuaded by Appellants’ argument that a person of
ordinary skill in the art at the time the invention was made would not have
been motivated by CIBA’s disclosure to synthesize the claimed compounds.
Appellants do not dispute that the claimed compounds and that of the prior
Appeal 2010-008589
Application 10/542,467

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art represent positional isomers. (See App. Br. 7-8.) Rather, Appellants
assert that a skilled artisan would not be motivated to provide a triazine
compound having a para-hydroxy group on the phenyl ring because it was
known in the art at the time of the invention that “an ortho-hydroxy group on
the phenyl ring that is directly and covalently attached to the triazine nucleus
is a requirement for a triazine based UV absorber.” (App. Br. 7.) However,
we agree with the Examiner that the usefulness of triazine derivatives is not
limited to UV absorbency or photostability. (See Ans. 4.) CIBA expressly
taught that its triazine compounds also possessed valuable properties as
stabilizers of organic materials against the action of heat or atmospheric
oxygen. (FF-2.) Therefore, CIBA provided motivation for a skilled artisan
to prepare the disclosed triazine derivatives to stabilize organic materials
against heat or atmospheric oxygen. Preparing the claimed positional isomer
of CIBA’s disclosed triazine derivatives for the same purpose, i.e., oxygen
or heat stabilization, would have amounted to no more than a predictable
variation that could have been implemented by a person of ordinary skill in
the art at the time of the invention. See KSR, 550 U.S. at 417.
For these reasons, we conclude that the claimed triazine compounds
would have been obvious over the CIBA compounds.

CONCLUSION OF LAW
The record supports the Examiner’s conclusion that CIBA would have
made the claimed compounds obvious.

Appeal 2010-008589
Application 10/542,467

6
SUMMARY
We affirm the rejection of claims 1-8 and 11-13 under 35 U.S.C.
§ 103(a) as unpatentable over CIBA.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

alw

BASF Corporation
Patent Department
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P.O. Box 2005
Tarrytown, NY 10591